Wednesday, 14 December 2016

Confusion around G 1/15 & conceptual splitting

Since I reported a couple of weeks ago about the order issued by the Enlarged Board in G 1/15, there have (at the last count) been 69 comments on the post, which for me is quite a lot. There is a similar, though not quite as lengthy, discussion on the IPKat here. It seems that the EB's order has not yet settled the issue around partial priorities, and there remain some questions about how it should be interpreted. We should, of course, get some clarity once the reasoned decision comes out. For now though, there seems to be quite strong disagreement among some commenters about how to assess partial priority.

The disagreement seems to boil down to whether conceptual splitting of a generic OR type claim can result in different priorities for different parts of a generic claim. Some anonymous commenters have said that this cannot be correct, as it cannot be right to assign a priority to a part of a claim that has not been disclosed. Others, however, have said that conceptual splitting is not even needed, since the only requirement is based on what is disclosed in the priority document. My personal view is that the conceptual splitting approach makes more sense, and avoids problems with Article 4C(4) of the Paris Convention, even though it does result in assigning a priority date to a part of a generic claim that is not literally disclosed in a priority document. It is plausible that the EB could come to a different interpretation, although in my view this interpretation is already covered by the words "at least implicitly" in the order.

The issue can probably be best explained by reference to one of the examples in the FICPI memorandum which, as you will recall, was the basis for the decision on partial priorities in G 2/98 and which was totally ignored by decisions from the boards of appeal that went down on the side of literal interpretation of point 6.7 (the "limited number of clearly defined alternatives" bit). The example reads as follows:

b) Broadening of range (temperature, pressure, concentration, etc.).

Let us assume that a first priority document discloses a temperature range of 15-20° and a second priority document discloses a temperature range of 10-25°.

If multiple priorities for one and the same claim are allowed, it will suffice in the European patent application to draw up a claim directed to the temperature range 10-25°.

If multiple priorities for one and the same claim are not allowed, the applicant will have to draw up two parallel claims, one directed to the temperature range 15-20° and enjoying the first priority, and another claim directed to the temperature ranges 10-15° or 20-25°, which claim will then enjoy the priority of the second priority document which was the first one to disclose these temperature ranges.

It should be clear from this example that there is no need to have literal basis for the ranges 10-15° and 20-25° in the second priority document (let's call it P2) to allow priority for these portions to be validly claimed in the later filed European application (let's call it EP). This, to me at least, suggests that the conceptual splitting approach is correct, where priority for the narrow range of 15-20° is from the first priority document (P1) and for the other parts of the range from P2.

I would guess that the reasoning in G 1/15 will need to go over in detail each of the examples in the memorandum (which G 2/98 did not) to establish clearly what they mean by assigning partial priorities. Unless they do, the argument about whether conceptual splitting is allowed or not will continue to rumble on. My prediction, for what it is worth, is that they will go over each of the examples, and find that conceptual splitting is a necessary feature of assigning partial priorities to a generic OR type claim, particularly in cases where priority is claimed from more than one document, such as in the example above. I might, however, be wrong.

18 comments:

JPO Examination Guideline stipulates as follows:Where modes for carrying out the claimed invention are newly added, the effects of priority claim shall be determined by each newly added part.Please see below (2), 4.1, 4 (The last paragraph in page 6)http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/4_1.pdf

I had thought that effects of priority are not affected when modes are newly added but new dependent claims are not added in EPO procedure.

Counsel for Nestec submitted that, even if that was so, the only consequence was that claim 5 was not entitled to priority. He argued that claim 1 would still be entitled to priority, since although claim 1 covered arrangements in which the stop means retained the capsule in an inclined manner relative to the axis of the capsule in the extraction position, they were not disclosed by claim 1. (point 103)

However, the judge did not accept the argument.

Please suppose the situation where modes for carrying out the claimed invention are newly added (but new claim is not added) in the subsequent application, there is another application (by the third party) disclosing the same modes during priority interval.

Which should the original claim be rejected or granted?

In this regard, I posted a thesis in EIPR six years ago. Please see page 525 in the below thesis.https://www.dropbox.com/s/13lvjt8w5fvtozh/EIPR%2010%202010%20KS%20OFFPRINT%20FINAL.pdf?dl=0

As you know, Tufty, I believe that when we see the reasons for G1/15, they will overrule the proviso in point 6.7 of G2/98.

The reason for my belief is that this proviso set a substantive condition. It said that a generic OR-claim had to give rise to the claiming of a limited number of clearly defined alternative subject-matters. (At least for multiple priorities, but it seems to be generally assumed -- including by the FICPI Memorandum -- that partial priorities should be judged the same way.)

Yet the G1/15 Order states that apart from a disclosure test, there are no other substantive conditions. Partial priority may not be refused for a claim encompassing alternative subject matter, provided that said alternative subject matter is properly disclosed in the priority document. [*]

To me, since the G2/98 proviso is another substantive condition, that's a clear signal that it is dead. Especially since, if there were to be a further condition, Question 2 of the referral specifically asked if "a limited number of clearly defined alternative subject-matters" was the correct test.

So where does conceptual splitting fit?

As we know, after G2/98 there was a series of T decisions which took the proviso of point 6.7 literally. That's what eventually led to poisonous priorities.

Then you and Board 3.3.07 (T1222/11 and T0571/10) proposed conceptual splitting. Instead of looking for explicit alternative subject matters, the claim could be split conceptually into just two alternatives: the subject matter which does have partial priority, and the subject matter which doesn't. If the generic claim covers X, and the priority document discloses P, then the two alternatives are P and (X-P).

Initially I was enthusiastic about this, as it seemed like the solution to the poisonous priority problem. But the more I've thought about it since, the more I think that in determining a specific partial priority it's just an unnecessary fudge.

I think that conceptual splitting, as originally proposed, is just an attempt to shoehorn a solution into the constriction set by G2/98's proviso. If P is to have partial priority, the proviso requires that the whole claim should split into a limited number of alternatives. P and (X-P) split the whole claim into a limited number of alternatives.

But if the proviso is dead, as I believe, then there's no need to shoehorn anything into it.

Instead, you can just say "P has partial priority, because P was properly disclosed in the priority document. And for this partial priority, (X-P) doesn't matter."

Isn't that what the G1/15 Order is saying?

I think it's important to view it this way if you have multiple priorities. For each priority, you need to be able to say that the subject matters P1 and P2 were properly disclosed in the relevant priority applications, so you get those dates for them. And that (X-P1) and (X-P2) don't matter -- you don't need to check if they have any basis anywhere.

Of course, it's always going to be possible to split the claim conceptually that way, into P and (X-P). And it might be relevant, if you've already determined that P has the partial priority without reference to (X-P), but then you just want to say that the remaining subject matter within (X-P) only has the filing date.

But the fact that it's always going to be possible to make this conceptual split of the whole claim only points up why it's a fudge when you are determining what does have the partial priority. You will always be able to say that the condition of the G2/98 proviso is met. But a proviso which is true 100% of the time isn't a proviso.

---------------------[*] By the way, when G1/15 says that the "alternative subject matter" has to be disclosed, that's just the subject matter for which you are claiming a partial priority, not any other alternative subject matters covered by the generic claim.

Conceptual splitting seems appropriate to avoid P2 in Tufty's example (from the FICPI) not being considered the "first application" in the sense of Art 4C(4) Paris Conv. P2 is not the first application to disclose the invention disclosed in P2: P1 is (a narrow disclosure within the broader disclosure of P2).

P2 is only the "first application" for the disclosure of P2-P1. We want to be able to claim priority from both P1 and P2 (which a sane system ought to allow - the FICPI memorandum seems to have been intended to make sure this was the case).

P2-P1 conceptual splitting therefore does seem to matter (to me). This requirement for conceptually dividing the claim seems to stem from the Paris Convention, not G2/98.

But how are you going to claim priority from P2 for P2-P1 if P2 does not directly and unambiguously disclose P2-P1?

The orders of G 2/98 and G 1/15 both require that whatever claim or part of a claim you are claiming (partial) priority for is directly and unambiguously disclosed in the priority document. Even if P2 itself claims priority from P1 (which is not given and should be irrelevant at least for the PC), that does not mean it discloses P2-P1.

Of course, that is the bit that is interesting, and that is the bit that the G1/15 order does not really tell us how to deal with (because the question is not directed to this - the questions could have been formulated better in my opinion).

For the law to work as envisaged by the FICPI memorandum, it seems to me it should be possible to claim priority for P2-P1 without having to write, in P2, a disclaimer to P1. To me, that seems like a very inelegant way for the system to work.

As Tufty says, we need to see what the eBoA make of the examples of the FICPI memo. I think we all understand each others' positions, so let's just wait and see.

I'm not convinced that Tufty's example from the FICPI Memorandum does support conceptual splitting of the claim.

It does say that if you can't have multiple priorities for a single claim, then you would be forced into real splitting of the claim, to ensure you get your partial priority. In this case, you would need to draft separate claims.

Although FICPI don't explore it in detail, the memo also suggests that for this real splitting, the second priority application would need to have explicit basis for the temperature ranges 10-15° or 20-25°, and not just for 10-25°. (Quote: " ...the second priority document which was the first one to disclose these temperature ranges".)

The FICPI memo also says that this problem goes away if multiple priorities for one and the same claim are allowed. But while that's true, is it really because they are doing conceptual splitting of the claim? I don't think they say either way.

Wouldn't conceptual splitting of the claim run into the same problem as real splitting, that the second priority application would need to have explicit basis for the temperature ranges 10-15° or 20-25°? This is the problem which the anonymous commenter in the previous thread has highlighted.

Perhaps Tufty's approach would be to say this can't be a problem, because the memo says it isn't. Right, but that presupposes that the memo is doing conceptual splitting of the claim, rather than something else that makes the problem go away.

My alternative to conceptual splitting of the claim is in this IPKat comment. It also deals with the Paris 4C(4) issue.

My proposal is that instead of conceptually splitting the claim, you should look at the priority effect of the two priority applications, which according to G1/15 depends only on their respective disclosures.

In FICPI's example, the first priority application gives priority for 15-20°.

In the absence of the first application, the second would give priority for 10-25°. But there is a part of that 10-25° range for which it is not the first application. For that part of the range, the second priority is not effective. But it continues to be effective for 10-15° and 20-25°

You may say that's not much different from conceptual splitting. But it's not conceptual splitting of the claim. That's important, because it overcomes any need for the second priority application to have explicit basis for the temperature ranges 10-15° or 20-25°.

It's also in agreement with what we know so far about the G1/15 decision. It doesn't go beyond the prescribed test of the disclosures of the priority documents. Conceptually splitting the claim is arguably a further condition or limitation. (Of course, I accept I might have to change my tune when we see the actual reasons for G1/15!)

To me, that seems the same conceptual split. Unless there is a claim there is nothing to assign priority to, so it seems like a matter of semantics whether what one splits conceptually is the disclosure of the priory documents or the regions of the claim that correspond with the disclosure of each priority document. That is not to say that it doesn't matter (I suppose it may), but I think the outcome is the same?

>Article 4A (1) of the Paris Convention shows that priority is a right which stems from the act of filing the first application. Then Article 4B explains how this priority protects you. Your subsequent application "shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention...".

>Finally, Article 4F allows for partial priority. Priority may not be refused "on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed".

>So you get priority - full or partial - merely on the basis of what subject matter your first application discloses.

I cannot agree with you more.

You also said in this blog as follows:

>[I]n a generic-OR situation partial priorities help for novelty but may not help for inventive step.

Apart from the decision of the EBA, do you feel natural as the interpretation of Art. 4B and 4F concerning inventive step?

Art. 4B states that subsequent application (not subsequent claim) shall not be invalidated.

In this regard, the question in G3/93 was as follows:

Does a document published during the priority interval and whose technical contents correspond to that of the priority document constitute prior art citable under Article 54(2) against a European patent application where the claim to priority is not valid because said application comprises subject-matter not disclosed in the priority document?

As everybody knows, this answer was NO.

I would like to ask the modified question as follows:

Does a document published during the priority interval and whose technical contents correspond to that of the priority document constitute prior art citable under Article 54(2) against a European patent application where the claim to priority is partially valid because said application comprises both species disclosed and species not disclosed in the priority document?

Which is the answer of the question, yes or no?

I would like to ask you again. Please teach me what the reasoning of English court (Robin Jacob) which changed the interpretation of section 6 was.

To answer your "modified" question: the partial priority would "split" the claim into species OR (genus-species). The document would not be citable against species, because species has priority. The document would be citable under Art. 54(2) against (genus-species). If the document happens to render (genus-species) obvious, then the claim falls. (The applicant could still amend his application to "species" and get a patent on that.)

Thank you for teaching me a clear answer. I have understood the current practice in EPO.

When was such partial priority practice established? Is there any remarkable case?

According to legislative intent in the FICPI Memorandum, the document didn’t use to be citable against (genus-species). So even if the document happened to render (genus-species) obvious, the claim didn’t use to fall, I think.

Do you know when the interpretation of partial priority changed? What was occasion?

I think that the Paris Convention itself allows multiple different interpretations. These interpretations have evolved over time. So it is difficult to determine a precise moment when the interpretation of partial priority changed.

Certainly the adoption of the EPC in 1978 was a defining moment. Before then, different European countries had different interpretations, all of which were believed to be in accordance with Paris.

But of course, even the interpretation of priority under the EPC has changed over time. In fact, it is still evolving: we await the reasons for G1/15.

You asked earlier about Section 6 of the UK Patents Act. There is an interesting discussion of the history of Section 6 in the so-called "Black Book" (the "CIPA Guide to the Patents Acts"). Maybe you can find a copy in a library. However, the current edition of the Black Book ends with the interpretation given in Nestec v. Dualit, which I think will be overturned by G1/15.

The Black Book gives details of the decision by Robin Jacob which I mentioned previously. It is Beloit v Valmet [1995] RPC 705. I'm not aware of a free online copy of this decision, but again maybe you can find a library which holds the Reports of Patent Cases (RPC). I suggest you read the Black Book first if you can. There is also a brief overview by the UK Intellectual Property Office here.

In summary, Beloit v. Valmet held that Section 6 just confirms the effect of priority as set out in Section 5, and doesn't have any extra substantive effect. The judge reasoned that sections 5 and 6 should be interpreted to agree with the EPC, including Decision G3/93. The EPC has no equivalent to Section 6.

"According to legislative intent in the FICPI Memorandum, the document didn’t use to be citable against (genus-species). So even if the document happened to render (genus-species) obvious, the claim didn’t use to fall, I think."

I don't think the FICPI Memorandum considered obviousness, so I wouldn't draw this conclusion.

In this single-priority example, I would reach the same conclusion as Anonymous on 20 December, though I would express the reasons differently. (The real difference between us comes if you have multiple priorities.)

I also think so. Typical divergent example is old German interpretation and old UK interpretation. The former was represented by umbrella-theory, and the latter was represented allowing not to claim multiple priorities for one and the same claim.

>The FICPI Memorandum said that it is "probably recognized by everybody" that an AND-claim to A+B cannot enjoy a partial priority from a first priority document describing A alone.

In this regard, I would like to point out one thing.

Although it tends to be misunderstood, umbrella-theory protects the applicant of A+B+C only against intervening publication of his first invention A+B but does not protect the applicant of A+B+C against intervening publication of his second invention A+B+C. (The board in T301/87 said same manner at point 7.8.)

And as you said, protection against inventive step as well as novelty would be nice, and this was indeed the position under section 52 of the 1949 Act.

So, although the interpretation of partial priority between Germany and the UK were different each other, the result of intervening act used to be same. If the intervening act was A+B, the claim would not fall. If the intervening act was A+B+C, the claim would fall.

It was common in terms of not causing self-collision by any act occurred between the priority interval.

The occasion change this point was G3/93, I think.

And now I was learnt from many people here. There is not an estoppel rule. The patent owner of the invention A+B can exercise of his rights against somebody working A+B+C. But in this situation, I do not know what it is worth to reject his application for an invention A + B + C in the case of intervening act is A+B.

I understand it is worth to reject his application for an invention A + B + C in the case of intervening act is A+B+C. The reason is that A+B+C may have inventive step compared with A+B.

Concerning your comments, I have just read not only comments for me but also one for the others.

I appreciate that you taught me lots of valuable facts, especially the FICPI Memorandum C. I found out when the interpretation changed.

As you said to me, actually I found interesting facts in page 3-4 of the Memorandum.http://www.timjackson.plus.com/FICPI_Memo_C.pdf

At the context of broadening of chemical formulae, it was provided the example in which the first priority document is directed to a composition including chlorine and the second priority document is directed to the use of bromine, iodine or fluorine as a substitute for chlorine. It was arguing that if the applicant couldn't have multiple priorities for one and the same claim, then he would have to draw up two parallel claims for the two alternatives. It doesn't spell it out explicitly, but if public use of the chlorine embodiment is proved to have taken place between the two priorities dates, clearly the claim concerning the second alternative would be rejected by the intervening prior act and an exhaustive list of the halogens which any school boy can find in his elementary text book.

However, the Memorandum was arguing necessity of multiple priorities for one and the same claim to avoid inventive step attacks.

Actually the Memorandum states as follows:[I]f public use of the chlorine embodiment is proved to have taken place between the two priorities dates, the halogen claim will be declared invalid in a country of the first type, and valid in its entirely in a country of the second type.(*) The country of the second type is allowing multiple priorities for one and the same claim.

As you wrote, the Munich Diplomatic Conference adopted the Memorandum's proposals, so under the EPC partial priority for OR-claim used to be valid for inventive step attacks.

However such an idea was overruled by G3/93 as you wrote.

So the timing abandon of the merit of partial priority for OR-claim against inventive step attacks is when the opinion of G3/93 was rendered.

Is this a correct understanding? (I had thought that G3/93 denied only the effect of the priority right for an AND-claim.)

Even so, I have circumstantially understood that the interpretation of partial priority in Patents Act 1977 changed. Now, I recognize that under Section 6 of the Patent Act 1977, partial priority is not valid for inventive step attacks.

However, I am convinced that under the Patent Act 1949, partial priority was valid for inventive step attacks.

Section 4 (6) can be interpreted to contain a direct recognition of partial priorities of the Paris Convention. This provision reads as follows:

Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a convention application, may include claims in respect of developments of or additions to the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section one of this Act to make a separate application for a patent.

On the other hand, Section 26 (7) stipulates that patents of addition are valid for inventive step attacks. This provision reads as follows:

The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—(a)the main invention described in the complete specification relating thereto; or(b)any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition;and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

This interpretation of partial priorities is consistent with the origin of Convention priority, namely avoiding self-collision. Discussion on the IPKat, Old observer said “the Paris Convention was created in order to avoid self-collision.” He also said “the EBA found an elegant way to bring back this postulate.” I also wrote the facts that the origin of multiple priorities was introduction of patents of addition under the Paris Convention in epi-Information.

Under these circumstances nobody imagined that partial priorities were not valid for inventive step attacks when the FICPI Memorandum was drafted, I think. The example of public use of the chlorine embodiment symbolizes it.

The use of bromine, iodine or fluorine is obvious form the use of chlorine, I think. Nevertheless, the Memorandum says that the halogen claim is valid in its entirely.

So my conclusion is G3/93 changed everything. And the current interpretation of partial priority is consistent with the EPC even if it were allowed the poisonous priority.(On the other hand, it is inconsistent with the Paris Convention as I already wrote.)

But the EBA denied the poisonous priority. There is a possibility that Old observer’s expectations will be positive.

About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.